Here’s a short one. We have co-inventors, the relevant one is James McGhie. He was an inventor on a patent of which the patent-in-suit was a continuation-in-part. McGhie assigned the original patent to the predecessor-in-interest of the plaintiff, but didn’t assign his ownership of the continuation-in-part. The plaintiff argued that the assignment of the parent included the continuation-in-part. Here’s the language:

I do hereby sell, assign, transfer and set over unto the said ASSIGNEE, its successors and assigns, the full and exclusive right, title, and interest in and to said invention, in and to said application, and in and to any Letters Patent to be granted and issued thereon….

Nope, not an assignment of the continuation-in-part. What’s the argument?

Alpha One argues that under MHL Tek, LLC v. Nissan Motor Co., 655 F.3d 1266 (Fed.Cir.2011), the “applicable test” for determining the scope of an assignment is “whether the inventions claimed in the patent-in-suit were ‘inventions and discoveries’ set forth in the parent application.” But MHL Tek did not establish a generally applicable legal standard. In MHL Tek, the court considered an assignment provision which expressly assigned “inventions and discoveries in [the Parent Application].” Accordingly, MHL Tek teaches that the proper inquiry is the scope of the assignment. Here, the 2002 Assignment assigns only “said invention, in and to said application ….” The ′897 Patent is only a continuation-in-part of the 2002 Provisional. As such, the ′897 Patent is not clearly within the scope of the 2002 Assignment. Accordingly, Alpha One has not established that the 2002 Assignment provides it with ownership of the ′897 Patent.

Alpha One argued alternatively that McGhie was contractually obligated to assign, but that’s not good enough: McGhie at best had only a duty to assign, which doesn’t create any present rights in the potential assignee that support standing. But it would appear that Alpha One was able to enforce that duty, after the opinion it got the assignment from McGhie.

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Ms. Chestek is admitted to practice in Connecticut, the District of Columbia, Massachusetts, New York and North Carolina and is Board Certified by the North Carolina State Bar's Board of Legal Specialization in Trademark Law.

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